Tag Archives: 2000



November 5 / All Articles, Computing, Trademark

Why Domain Names Are Not Generic: An Analysis Of Why Domain Names Incorporating Generic Terms Are Entitled To Trademark Protection

Abstract: As the Internet continues to become an everyday part of people’s lives, its widespread use is giving rise to complex and novel legal issues. In particular, trademark law is evolving to meet the rapid pace of the Internet. The legal community is currently analyzing traditional trademark legal principles to determine whether those principles sufficiently address the issues arising in today’s high tech society.

In fact, Internet commerce is the driving force behind much of the evolving trademark law. Arguably, the appeal of the Internet can be attributed primarily to the prevalence of electronic commerce. Many Internet e-commerce companies primarily use their domain name as their company name, service mark, and trademark. For example, drugstore.com is an online pharmacy; homegrocer.com is an online grocery store; vitamins.com is an online nutritional source; and petstore.com is an online pet supply store.

As of the date of this paper, none of the previously listed companies have attained federal registration of their service marks. According to the results of a trademark search conducted on December 17, 1999 using Thomson & Thomson, both DRUGSTORE.COM and VITAMINS.COM are the subjects of pending applications in the United States Patent and Trademark Office (“USPTO”). PETSTORE.COM had not yet filed an application for registration. However, under new office policies, the USPTO may refuse registration to each company’s “domain name trademark” on the grounds that it is generic. [1]

While the USPTO follows traditional trademark law for determining whether any trademark can obtain federal registration, “domain named” companies are provoking much discussion. Under traditional trademark principles, the current policy of the USPTO is to deny registration to a mark consisting of a generic term followed by a Top-Level Domain extension (“TLD”). [2]

This paper will explore the proposition that domain names consisting of arguably generic terms followed by a TLD are still distinctive; therefore, they should still obtain and enjoy some level of trademark protection.

The discussion of this controversial proposition requires an understanding of domain names, traditional trademark principles, and the USPTO’s treatment of domain names as trademarks. Section II provides background information on domain names and traditional trademark principles. Section III discusses the USPTO’s decision to disregard top-level domain extensions when considering whether trademark registration is available to a mark consisting of a domain name. Following this discussion, in Section IV, contrary analysis contends that the USPTO should afford trademark protection to domain names that consist of generic terms combined with a TLD, and examines the levels of protection the law should afford them. Finally, Section V explores the possible alternatives.

 

 

January 28 / All Articles, Copyright

Copyright Protection Of Biotechnology Works: Into The Dustbin Of History?

Starting in the early 1980s, and ending in the very beginning of the 1990s, a number of scholarly commentators proposed that biotechnology works are proper subject matter for copyright protection. [2] Typically, these commentators focused on the idea that DNA sequences may be copyrightable works of authorship. Many commentators argued that copyrighting biotechnology might be a good idea because it would allow protection of works that would not qualify for patent protection. The idea of copyrighting biotechnology arose in the early 1980s at the time when patent protection of biotechnology seemed doubtful. Analogies of computer programs and DNA sequences were often made. The argument was that because DNA sequences are a type of biological computer program, and computer programs are copyrightable, then DNA sequences should also be copyrightable. Thus, to a number of commentators, the concept of copyrighting DNA sequences was an untapped and powerful alternative to patent protection.

Nearly 20 years after the first proposal, this concept has seen little development. A review of the literature reveals neither cases nor statutes dealing with the issue, and the Copyright Office has unofficially stated that it will not grant copyright registration to gene sequences or DNA molecules because they are not copyrightable subject matter. [3]

This article explains the legal reasons why copyright protection for biotechnology works is either impermissible or of severely limited scope. In particular, this article will present the illustrative issue of copyright protection for DNA sequences engineered by scientists.

 

James G. Silva, Esq. [1]